BATA INDIA LIMITED Vs. KHADIM HOLDINGS PVT. LTD.

JUDGEMENT

(1.) THIS is an application under section 50 of the Copyright Act, 1957 for rectification of registration numbers A -56214/99, A -56704/99, A -56215/99, A -56216/99 and A -56218/99. Petitioner in its similar petitions in all the five cases has submitted that it is holding more than three hundred trade marks including the trade marks Bata Hawai, Bata Hawai Wedges and Hawaina and has given registration particulars of these marks. It has given the sale figures in relation to these products. It caused, a caution notice published in certain newspapers on 26th June, 1998 against wrongful use of these trade marks by certain manufacturers. In response to the said caution notice, on or about 29th June, 1998, the respondent filed an application in the High Court under the Trade and Merchandise Marks Act, 1958 for the cancellation of petitioner's trade marks Hawai, Hawai Wedges and Hawaina on various grounds. Petitioner, being aggrieved by the use of the trade mark Hawai by the respondent, instituted a suit, being C.S. No. 389 of 1998 for a declaration that the defendant (herein respondent) is not entitled to in any way or manner to the use of the word Hawai or any other mark deceptively similar thereto as its trade mark. Written statement has been filed by the respondent in the said suit and a copy of the same was served on the petitioner on our about 7th August, 2002. In the meantime, the respondent has obtained the following copyright registrations, namely: -

(2.) RESPONDENT in its similar written statements in all the five cases has stated that Hawai Chappals have as such become synonymous with the such rubber chappals to be attached to the foot by thongs and thus those have become descriptive of such rubber chappals. Respondent has mentioned the names of the other manufacturers using the word Hawai for their products. No person can have any proprietary right or interest over the word Hawai. Respondent has mentioned about the popularity it has attained in the market with the mark. Respondent has -mentioned that the petitioner filed Civil Suit No. 389 of 1998 against the respondent as a counterblast to the A.T.M. No. 2 of 1998 filed by it against the petitioner. There is no legal embargo for the respondent to obtain copyright registrations for its marks. It is not neither material nor relevant that such applications for copyright registration were made by the respondent after filing of the Civil Suit No. 389 of 1998 by the petitioner. Although the written statement in the Civil Suit was filed by the respondent herein long back, the instant application for cancellation has been filed by the petitioner only towards the end of October, 2002. Respondent has generally repudiated the averments of the petitioner in the petition.

(3.) PETITIONER in its rejoinder has repudiated the averments of the respondent generally and has specifically responded to a few of the averments. As to the use of the word Hawai in various taxation legislations quoted by the respondent, the petitioner has submitted that the references are more in the context of indicating the product and not giving any reference to a trade mark. Petitioner has refuted the argument of the respondent as to Hawai being public juris. Petitioner has submitted that Hawai was for the first time used and registered in respect of rubber slippers by the petitioner.